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Sept. 6 --When applied to sandwiches, consumers understand the term “footlong” as describing a unit of measurement, and although in such a context the term is understood as an adjective, it is nonetheless generic, the Trademark Trial and Appeal Board held Sept. 5, sustaining an opposition against Subway's attempt to register the mark (Sheetz of Delaware, Inc. v. Doctor's Assocs. Inc., TTAB, No. 91192657, 9/5/13).

Additionally, the board said that the term is also merely descriptive and has not acquired distinctiveness, despite the millions of dollars that Subway has spent to advertise its footlong sandwich deals and the company's billions of dollars in sales of footlong subs.

Numerous other restaurants and delis have used the term to apply to 12-inch sandwiches, the board noted. That some of these other restaurants stopped using the term after being sent cease and desist letters is not proof that the term has achieved secondary meaning, but rather can be seen “as simply a desire to avoid litigation” with “the largest fast food restaurant chain in the country,” the board said.

Sheetz Says Term Is Generic

Doctor's Associates Inc. is the parent company of Subway, which has over 40,000 locations worldwide. In 2007, Subway filed a use-based trademark application to register “footlong” in standard character format for sandwiches.

Sheetz of Delaware, Inc., operates a number of convenience stores and gas stations. Sheetz locations also sell sandwiches. Sheets filed an opposition to the footlong registration, arguing that the term is generic, or in the alternative that the term is merely descriptive and has not acquired distinctiveness.

Application Amended to Exclude Hot Dogs

The board first ruled on Subway's motion to amend its application to exclude hot dogs. Hot dogs, Subway argued, are distinct from sandwiches, and therefore the widespread use of footlong to describe a 12-inch hot dog should not be relevant to Subway's application, it argued.

The board said that “a hot dog is a sandwich” but it nonetheless allowed Subway to amend its application.

The first prong of the test, the board noted, looks at the genus of the goods at issue. The second prong requires a court to consider whether the “relevant public understand[s] the designation primarily to refer to that genus of goods.”

Sandwiches, excluding hot dogs, are the relevant category of goods in this case, the board said. The board then defined the relevant public as “ordinary consumers who purchase and eat sandwiches.” The genericness determination will thus turn on whether the relevant public understands footlong to refer to sandwiches in general, of if instead they understand it to identify Subway sandwiches in particular.

“Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications,” the board noted.

The first thing the board looked at was a dictionary definition that said the term was an adjective meaning “about a foot in length: a footlong hotdog.” While hot dogs are excluded from the genus of goods, “The evidence in this record indeed shows that the use of 'Footlong' in connection with hot dogs is so pervasive that it affects how consumers perceive the term 'Footlong' in connection with other types of sandwiches,” the board said.

However, there was ample evidence that the term is generic for a type of sandwich even without reference to usage of the term with respect to hot dogs, the board said. Notably, not even Subway uses the term as a trademark, the board noted.

“In the context in which [Subway] uses the term, it is clear that FOOTLONG denotes the fact that [Subway] purveys a type of sandwich that is approximately one foot on length,” the board said after reviewing a number of Subway's specimens of use.

Sheetz has also used the term to promote its sale of footlong sandwiches for $4, the board noted. Sheets also introduced into the record examples of numerous third-party uses of the term footlong to identify sandwiches that are approximately 12 inches in length.

Moreover, although Subway's own advertising campaign with respect to its sale of footlong subs for $5 attracted media coverage, “the authors of the articles,” the board said, “specifically identified SUBWAY as a trademark but did not identify 'Footlong' as a trademark. To the contrary, the predominant use of 'footlong' in these articles is as a term identifying a type of sandwich.”

Both Teflon Surveys Flawed

The board noted that both parties introduced Teflon surveys on the genericness issue.

“The surveys reach diametrically opposite results on the question of whether the term 'Footlong' is generic, and each party has criticized the survey conducted by its opponent,” Administrative Judge Marc A. Bergesman said.

The board, however, agreed with much of the criticism leveled at Subway's survey. Specifically, that survey was too narrow in focus because it focused on only consumers that frequently ate at fast food restaurants and sandwich delis. The relevant purchasing public, the board said, “include[s] patrons of eat-in and sit-down restaurants, delicatessens, and supermarkets that sell sandwiches.”

The survey also failed to clarify to the consumers the distinction between a common name and a brand name, the board said. As a result, consumers may have been led to believe that “a heavily advertised word like 'Footlong' has become equivalent to the terms the interviewer used to explain the meaning of a brand name, rather than ensure that the survey respondents understood the difference between a common name and a brand name,” the board said.

The Sheetz survey also had problems and the board said that it would not rely on it in making a genericness determination. Still, even without the Sheetz survey, the board found the term generic. The board said:

The commonly understood meaning of “Footlong,” [Subway]'s own use of the term, [Sheetz]'s use of the term and third-party uses demonstrate that purchasers understand that “Footlong” identifies 12-inch sandwiches. We accordingly find that FOOTLONG is generic for “sandwiches,” excluding hot dogs.

No Secondary Meaning Despite Millions Spent

The board then addressed Sheetz's alternative argument that the mark was merely descriptive and had not acquired secondary meaning. The board said that “for purposes of this discussion” it would treat the mark as merely descriptive but not generic.

Subway argued that the millions of dollars that it had poured into its popular “$5 FOOTLONG” campaign entitled it to registration of the mark under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). In addition to the money spent on its advertisements, secondary meaning is also demonstrated by its sale of over four billion FOOTLONG branded sandwiches between 2000 and 2009, Subway said. The board was not convinced that this evidence demonstrated secondary meaning.

“While [Subway] has achieved great commercial success, sales success is not necessarily indicative of acquired distinctiveness, but may be attributed to many other factors, the most likely being that [Subway] offers a quality product at a competitive price,” the board said.

Additionally, the board reiterated that even Subway used the term not as a trademark but rather to identify 12-inch sandwiches. Use of the term by Sheetz and numerous third parties to refer to sandwiches that are approximately one foot in length further undercuts Subway's secondary meaning argument, the board said.

Subway argued that it has aggressively enforced its rights to the mark, alleging that it has sent more than 30 cease and desist letters to third parties using the marks.

“However, acquiescence to demands of competitors to cease use of a term can be equally viewed as simply a desire to avoid litigation,” the board said. “This is especially true in this case, where [Subway] is the largest fast food restaurant chain in the country.”

The board concluded that Subway had failed to establish that footlong had acquired distincitvenes and sustained Sheetz's opposition on both genericness and acquired distinctiveness grounds.

Administrative Judges David Mermelstein and Gerard F. Rogers joined the board's opinion.

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